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People » Barbara Niemann Fadani

Barbara Niemann Fadani

Attorney-at-Law

Munich

Contact
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Memberships
  • AGEM (Intellectual Property and Media Section of the German Bar Association)
  • CITMA
  • DAV (German Bar Association)
  • ECTA
Qualifications
  • Registered UPC Representative
  • German-qualified Attorney-at-Law

I am an Attorney-at-Law, qualified in Germany and admitted to the bar in Germany and the courts of the European Union. I joined Boult to reinforce the EU team, creating another link between the German and UK offices.

Having lived and worked in Germany, Italy and the UK, I have an extensive understanding of European IP law. This incorporates work on European cross border litigation and the enforcement of trade marks and other IP rights, acting regularly before the German and European courts such as the Court of Justice, EUIPO, WIPO and DPMA.

In my role I am always conscious of the interconnectivity and interdependence between the job we do, the potential increase in brand or IP value we can deliver, and the value this can provide to a client. I have been fascinated by the power of branding and the value a trade mark can develop for a company when managed and enforced well. I believe that the interplay between a targeted enforcement and the increase in the value of a trade mark is often overseen and that portfolio management should be considered an investment rather than an expense.

I have a particular enthusiasm for assisting brands on the use of trade marks in films and other media, including recently the metaverse. I have assisted several film productions in obtaining rights clearance for the use of trade marks, music and other copyrighted material and I have also advised brand owners when their trade marks were used in films or social media without consent. This is also important when consumer brands are confronted with new phenomena such as NFTs, virtual environments and the metaverse in general that require them to adapt their protection and enforcement strategy constantly.

I maintain a keen interest in the future development of copyright and trade mark law in the UK after Brexit compared to the development in the EU.

Recent experience

Successfully defended a large multinational in the commodities industry in a preliminary injunction proceeding in front of a German regional court.

Advising a major governing body of European sports associations regarding the use of the names of its European sports events by the general public and by providers of licensed and non-licensed merchandising, as well as their registrability as a trade mark in several jurisdictions.

Developing a strategy for a clothing brand to prevent generic use of its trade mark especially on the internet.

Acting for a UK premier league football club in relation to the use of its colours in combination with football related imagery on a German website.

Advising a sports persona regarding the use of the name, image and trade marks in an international feature film.

Assisting an international film production with rights clearance regarding several pieces of art and music to be used in a film.

Representing a client in front of the CJEU in a trade mark cancellation proceeding with Brexit related issues.

Publications
  • N/a
Relevant Search Terms
Recommended Sites
  • Me on Twitter @BNF_IP
  • https://ipkitten.blogspot.com/
  • https://twitter.com/TheFashionLaw
  • https://www.urheberrecht.org
  • https://ecta.org/
  • https://www.worldtrademarkreview.com/
Suggested Media
Recognitions
Additional Info
Languages
  • German
  • Italian
  • English
“Utilising my expertise to guide clients towards the right choices in IP protection and enforcement to increase and maximise their brand value has always been a real motivation for me.”
Sector Experience
Trade marks

I am an Attorney-at-Law, qualified in Germany and admitted to the bar in Germany and the courts of the European Union. I joined Boult to reinforce the EU team, creating another link between the German and UK offices.

Having lived and worked in Germany, Italy and the UK, I have an extensive understanding of European IP law. This incorporates work on European cross border litigation and the enforcement of trade marks and other IP rights, acting regularly before the German and European courts such as the Court of Justice, EUIPO, WIPO and DPMA.

In my role I am always conscious of the interconnectivity and interdependence between the job we do, the potential increase in brand or IP value we can deliver, and the value this can provide to a client. I have been fascinated by the power of branding and the value a trade mark can develop for a company when managed and enforced well. I believe that the interplay between a targeted enforcement and the increase in the value of a trade mark is often overseen and that portfolio management should be considered an investment rather than an expense.

I have a particular enthusiasm for assisting brands on the use of trade marks in films and other media, including recently the metaverse. I have assisted several film productions in obtaining rights clearance for the use of trade marks, music and other copyrighted material and I have also advised brand owners when their trade marks were used in films or social media without consent. This is also important when consumer brands are confronted with new phenomena such as NFTs, virtual environments and the metaverse in general that require them to adapt their protection and enforcement strategy constantly.

I maintain a keen interest in the future development of copyright and trade mark law in the UK after Brexit compared to the development in the EU.

Recent experience

Successfully defended a large multinational in the commodities industry in a preliminary injunction proceeding in front of a German regional court.

Advising a major governing body of European sports associations regarding the use of the names of its European sports events by the general public and by providers of licensed and non-licensed merchandising, as well as their registrability as a trade mark in several jurisdictions.

Developing a strategy for a clothing brand to prevent generic use of its trade mark especially on the internet.

Acting for a UK premier league football club in relation to the use of its colours in combination with football related imagery on a German website.

Advising a sports persona regarding the use of the name, image and trade marks in an international feature film.

Assisting an international film production with rights clearance regarding several pieces of art and music to be used in a film.

Representing a client in front of the CJEU in a trade mark cancellation proceeding with Brexit related issues.

Publications
  • N/a
Relevant Search Terms
Recommended Sites
  • Me on Twitter @BNF_IP
  • https://ipkitten.blogspot.com/
  • https://twitter.com/TheFashionLaw
  • https://www.urheberrecht.org
  • https://ecta.org/
  • https://www.worldtrademarkreview.com/
Suggested Media
Recognitions
Additional Info

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